USPTO Patents Application 09741018

United States Bvtent and Trademark Ofhce

UNTTED STATES DEPARTMENT OF COMftfERCE
United States Patent and Trademark Office
Addresr COMMISSIONER FOR PATENTS
P.O. Box 1450

Alexandria, Virginia 22315-14S0
www.iispto.gov

APPLICATION NO.

FILING DATE

FIRST NAMED INVENTOR

ATTORNEY DOCKET NO.

CONFIRMATION NO.

09/741,018

12/21/2000

Katsuyuki Matsumoto

001627

6673

23850

7590

09/03/2003

ARMSTR0NG,WESTERMAN & HATTORI, LLP
1725 K street, NW
SUITE 1000

WASHINGTON, DC 20006

EXAMINER

PHAM, THOMAS K

ART UNIT

PAPER NUMBER

2121

DATE MAILED: 09/03/2003

Please find below and/or attached an Office communication concerning this application or proceeding.

PTO-90C (Rev. 07-01)

Office Action Summary

Application No^

09/741,018

Examiner

Thomas K Pham

Applicant(s)

MATSUMOTO ET AL.

Art Unit

2121

The MAILING DATE of this communication appears on tho cover sheet with the correspondence address
Period for Reply

A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE 3 MONTH(S) FROM
THE MAILING DATE OF THIS COMMUNICATION.

- Extensions of time may be available under the provisions of 37 CFR 1 .136(a). In no event, however, may a reply be timely filed
after SIX (6) MONTHS from the mailing date of this communication.

- If the period for reply specified above is less than thirty (30) days, a reply within the statutory minimum of thirty (30) days will be considered timely.

• If NO period for reply Is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHS from the mailing date of this communication.

• Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133).

- Any reply received by the Office later than three months after the mailing date of this communication, even if timely filed, may reduce any
earned patent term adjustment. See 37 CFR 1.704(b).

Status

^)M Responsive to communication(s) filed on 25 June 2003 .
2a)M This action is FINAL. 2b)n This action is non-final.

3) n Since this application is in condition for allowance except for formal matters, prosecution as to the merits is

closed in accordance with the practice under Expa/te Quay/e, 1935 CD. 11, 453 O.G. 213.
Disposition of Clainfis

4) ^ Claim(s) li5 is/are pending in the application.

4a) Of the above claim(s) is/are withdrawn from consideration.

5) n Claim(s) is/are allowed.

6) IE1 Claim(s) li5 is/are rejected.

Claim(s) is/are objected to.

8) n Claim(s) are subject to restriction and/or election requirement.

Application Papers

9) n The specification is objected to by the Examiner.

10) 0 The drawing(s) filed on is/are: a)n accepted or bO objected to by the Examiner.

Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).

11) 0 The proposed drawing correction filed on is: 3)0 approved b)n disapproved by the Examiner

If approved, corrected drawings are'required in reply to this Office action.

12) 0 The oath or declaration is objected to by the Examiner.
Priority under 35 U.S.C. §§119 and 120

13) n Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119{a)-(d) or (f).

a)nAII b)n Some*c)n None of:

1 .□ Certified copies of the priority documents have been received.

20 Certified copies of the priority documents have been received in Application No, .

3.n Copies of the certified copies of the priority documents have been received in this National Stage
application from the International Bureau (PCT Rule 17.2(a)).
* See the attached detailed Office action for a list of the certified copies not received.

14) 0 Acknowledgment is made of a claim for domestic priority under 35 U.S.C. § 11 9(e) (to a provisional application).

a) □ The translation of the foreign language provisional application has been received.

15) 0 Acknowledgment is made of a claim for domestic priority under 35 U.S.C. §§ 120 and/or 121.

Attachment(s)

1) n Notice of References Cited (PTO-892) 4) CD Interview Sumnnary (PTO-413) Paper No(s). ,

2) n Notice of Draflsperson's Patent Drawing Review (PTO-948) 5) [I] Notice of Informal Patent Application (PTO-152)

3) im Information Disclosure Statement(s) (PTO-1449) Paper No(s) . 6) d Other:

U.S. Patent and Trademartc Office
PTOL-326 (Rev. 04-01)

Office Action Summary

Part of Paper No. 6

Application/Control Number: 09/741,018
Art Unit: 2121

Page 2

Response to Amendment

1 . This action is in response to request for re-consideration filed on 06/25/2003

2. Claims 1-5 has been considered but they are not persuasive.

3. Claims 1-5 stand rejected under 35 U.S.C. 102(b) as being anticipated by Wood U.S.
Patent no. 6,178,514.

DETAILED ACTION
Claim Rejections - 35 USC §102

4. The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the
basis for the rejections under this section made in this Office action:

A person shall be entitled to a patent iinless -

(e) the invention was described in (1) an application for patent, published under section 122(b), by another filed
in the United States before the invention by the applicant for patent or (2) a patent granted on an application for
patent by another filed in the United States before the invention by the applicant for patent, except that an
international application filed under the treaty defined in section 35 1(a) shall have the effects for purposes of this
subsection of an application filed in the United States only if the international application designated the United
States and was published under Article 2 1(2) of such treaty in the English language.

5. Claims 1-5 are rejected under 35 U.S.C. 102(e) as being anticipated by Wood U.S. Patent
No. 6,178,514.

6. As for claim 1, Wood shows a portable electronic device comprising a common serial bus
connector provided with data terminals and a power supply terminal in conqDliance with a
common serial bus standard (col. 9 lines 39-41) for connecting a plurality of peripheral devices
in common to a host information processing device (col. 9 lines 3 1-36), a common serial bus
controller for executing predetermined data communication processing attendant on data
communication with an information processing device connected to the common serial bus
connector (fig. 12 element 224), and a control circuit connected to the common serial bus
controller for executing device operation processing for the usual operation of the electronic

Application/Control Number: 09/74 1,018 Page 3

Art Unit: 2121

device (fig. 7 element 21), the electronic device being capable of receiving a power supply from
the information processing device or an extemal power source as connected to the common serial
bus connector or from an internal power source (col. 9 lines 47-49 and col. 10 lines 10- 13), the
portable electronic device being characterized in that the control circuit discriminates among the
sources of supply of power and causes the common serial bus controller to execute the
predetermined data communication processing while power is supplied from the information
processing device connected to the common serial, bus connecter, or executes the usual device
operation processing while power is supplied from the external power source connected to the
common serial bus connecter (col. 9 lines 39-59).

7. As for claim 2, Wood shows a portable electronic device according to claim 1 wherein
the control circuit comprises discriminating means forjudging which of the information
processing device and the extemal power source is connected to the common serial bus
connector (col. 29 hues 4-8), and control means for causing the common serial bus controller to
execute the predetermined data communication processing when the connection of the
information processing device to the common serial bus connector is recognized (col. 22 lines
62-67), or executes the usual device operation processing when the connection of the external
power source to the common serial bus connector is recognized (col. 30 lines 7-8).

8. As for claim 3, Wood shows a portable electronic device according to claim 2 wherein
the discriminating means identifies the source of supply of power based on the voltage value of
the power supply terminal of the common serial bus connector (col. 28 lines 49-58).

9. As for claim 4, Wood shows a portable electronic device according to claim 2 wherein
the discriminating means identifies the source of supply of power depending on whether the

Application/Control Number: 09/74 1,018 Page 4

Art Unit: 2121

common serial bus controller has started data communication via the common serial bus
connector (col. 28 lines 24-27).

As for claim 5, Wood shows a portable electronic device according to claim 2 wherein the
control circuit further comprises means for detecting the connection of the information
processing device or the external power source to the common serial bus connector based on the
binary state of voltage level of the power supply terminal thereof, and the discriminating means
identifies the source of supply of power according to the result of detection (col. 30 lines 7-18),

Response to Arguments

In the remark the applicant argues that cited reference fails to disclose:

I) "discriminates among the sources of supply of power and causes the common serial bus

controller to execute the predetermined data communication processing while power is supplied

from the information processing device connected to the common serial, bus connecter, or

executes the usual device operation processing while power is supplied from the external power

source connected to the common serial bus connecter" as recited in claim 1.

In response to apphcant's argument,

I) It was noted that prior art (Wood USPN 6,178,514) teaches (as in figure 3) and (column 9,
lines 39-43, "there is shown a USB cable 28 connecting master USB hub 42 to a generic USB
device 62. For ease of illustration connector 58 and 60 are not shown. Each cable 28 includes
four wires. Two wires 66 and 68 carry power, respectively ground and Vcc"). Therefore, it is
clear that power is supplied from the information processing device (computer 12 of Wood)
connected to the common serial bus connecter. Thus, limitations are met by the reference.

Application/Control Number: 09/74 1,018
Art Unit: 2121

Pages

Conclusion

10. Applicant's amendment necessitated the new ground(s) of rejection presented in this
Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a).
Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).

A shortened statutory period for reply to this final action is set to expire THREE
MONTHS from the mailing date of this action. In the event a first reply is filed within TWO
MONTHS of the mailing date of this final action and the advisory action is not mailed until after
the end of the THREE-MONTH shortened statutory period, then the shortened statutory period
will expire on the date the advisory action is mailed, and any extension fee pursuant to 37
CFR 1 .136(a) will be calculated from the mailing date of the advisory action. In no event,
however, will the statutory period for reply expire later than SIX MONTHS from the date of this
final action.

Any inquiry concerning this communication or earlier coxnmunications from the examiner should
be directed to examiner Thomas Pham\ whose telephone number is (703) 305-7587 and fax number is
(703) 746-8874. The examiner can normally be reached on Monday-Thursday and every other Friday
from 7:30AM- 5:00PM EST or contact Supervisor, Mr. Anil Khatri, can be reached on (703) 305-0282.

Any inquiry of a general nature or relating to the status of this application should be
directed to the Group receptionist whose telephone number is (703) 305-3900.

Thomas Pham

Patent Examiner

August 28, 2003